As previously discussed here, in Samsung Elecs. Co. v. Apple Inc., the Supreme Court explained that under 35 U.S.C. § 289 the issue of assigning design patent damages is a two-step inquiry: “First, identify the ‘article of manufacture’ to which the infringed design has been applied. Second, calculate the infringer’s total profit made on that article of manufacture.” 137 S. Ct. 429, 434 (2016). The Supreme Court, however, did not articulate a specific test for identifying the article of manufacture, leaving that task to the lower courts.

In her new trial order, Judge Koh adopted the four-factor test proposed by the United States Solicitor General during oral argument before the Supreme Court in Samsung. SeeApple Inc., 2017 U.S. Dist. LEXIS 177199, at *50-51. The Solicitor General identified the following four-factors to be considered in identifying the “article of manufacture” under section 289:

· “[T]he scope of the design claimed in the plaintiff’s patent, including the drawing and written description”;

· “[T]he relative prominence of the design within the product as a whole”;

· “[W]hether the design is conceptually distinct from the product as a whole”; and

· “[T]he physical relationship between the patented design and the rest of the product,” including whether “the design pertains to a component that a user or seller can physically separate from the product as a whole,” and whether “the design is embodied in a component that is manufactured separately from the rest of the product, or if the component can be sold separately.”

Id. at *70-71.

Judge Koh also held that Apple had the burden of persuasion in identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article. Id. at 111. Judge Koh further held that while Apple had the initial burden of production in identifying the relevant article of manufacture and proving the amount of total profit on the sale of that article, once that burden was satisfied the burden would shift to Samsung to come forward with evidence of an alternative article of manufacture and any deductible expenses. Id. at *111-112.

The parties will now have several months to engage in additional fact and expert discovery to address the new analytical framework. A five-day jury trial begins on May 14, 2018.